Encyclopaedia Britannica, Inc. v. Rames Gangaram
Claim Number: FA0703000952192
Complainant is Encyclopaedia Britannica, Inc. (“Complainant”), represented by Thad
Chaloemtiarana, of Pattishall,
McAuliffe, Newbury, Hilliard & Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cyclopediabritannica.com>, registered with Key-Systems Gmbh.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 2, 2007. The Complaint was submitted in both Dutch and English.
On April 3, 2007, Key-Systems Gmbh confirmed by e-mail to the National Arbitration Forum that the <cyclopediabritannica.com> domain name is registered with Key-Systems Gmbh and that Respondent is the current registrant of the name. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 12, 2007, a Dutch language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 2, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@cyclopediabritannica.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Dutch language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cyclopediabritannica.com> domain name is confusingly similar to Complainant’s BRITANNICA mark.
2. Respondent does not have any rights or legitimate interests in the <cyclopediabritannica.com> domain name.
3. Respondent registered and used the <cyclopediabritannica.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Encyclopedia Britannica, Inc., has been in the business of manufacturing and selling reference materials under the BRITANNICA and ENCYCLOPAEDIA BRITANNICA marks since 1768. Complainant’s Internet presence includes an online database of reference materials for numerous fields, including art, health, history, science, business, finance, news, weather, sports, current events, entertainment, and shopping. Complainant provides this information at the <encyclopediabritannica.com>, <encyclopaediabritannica.com>, and <britannica.com> domain names.
Complainant has registered the BRITANNICA mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,506,869 issued
October 4, 1988; Reg. No. 1,309,991 issued December 18, 1984; Reg. No.
2,287,468 issued October 19, 1999).
Complainant has also registered the BRITANNICA mark with the Benelux
Office for Industrial Property (“BOIP”), the governing authority for trademarks
in the country where Respondent resides, the
Respondent’s <cyclopediabritannica.com> domain name, which it registered on December 8, 2006, resolves to a website with links such as “Arts,” “History,” “Science,” and “Technology.” These links redirect Internet users to Respondent’s websites, including Encyclopedia Belgica and Encyclopedia Germanica, where it offers competing encyclopedia products and services.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant’s valid trademark registrations with the USPTO
and BOIP sufficiently demonstrate its rights in the BRITANNICA mark pursuant to
Policy ¶ 4(a)(i). See Metro. Life
Ins. Co. v. Bonds,
FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under Policy ¶ 4(a)(i)); see also Honeywell Int’l Inc. v. r9.net,
FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s numerous registrations
for its HONEYWELL mark throughout the world are sufficient to establish
Complainant’s rights in the HONEYWELL mark under the Policy ¶ 4(a)(i).”); see also Renaissance
Hotel Holdings, Inc. v. The Renaissance
Respondent’s <cyclopediabritannica.com>
domain name fully incorporates Complainant’s registered BRITANNICA mark and
adds the term “cyclopedia,” a misspelling of the term “encyclopedia,” the
primary product Complainant offers under its BRITANNICA mark. Respondent’s addition of this term is not a
distinguishing difference. Consequently,
the Panel finds the disputed domain name to be confusingly similar to the mark
under Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb.
Forum May 19, 2004) (finding the addition of generic terms to Complainant’s
HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and
<shopforharrypotter.com> domain names failed to alleviate the confusing
similarity between the mark and the domain names); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum
Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are
confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the
AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive,
descriptive and generic terms, some of which describe Complainant’s
business.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and
legitimate interests in the <cyclopediabritannica.com>
domain name. Complainant must first make
a prima facie case in support of its allegations, and then the burden
shifts to Respondent to show it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See
Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii) before the burden shifts to the respondent
to show that it does have rights or legitimate interests in a domain name); see
also AOL LLC v. Gerberg,
FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first
make a prima facie showing that Respondent does not have rights or legitimate
interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <cyclopediabritannica.com> domain
name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names); see also Geocities v.
Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent
has no rights or legitimate interests in the domain name because the respondent
never submitted a response or provided the panel with evidence to suggest
otherwise). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
None of the evidence in the record points to Respondent
being commonly known by the <cyclopediabritannica.com>
domain name. Hence, the Panel finds that
Respondent has not established rights or legitimate interests in the <cyclopediabritannica.com> domain
name pursuant to Policy ¶ 4(c)(ii). See
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see
also Coppertown Drive-Thru Systems,
LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Moreover, Respondent is using the <cyclopediabritannica.com> domain name to promote its competing encyclopedia websites. In Oregon State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001), the panel found that the respondent’s use of the <oregonstatebar.tv> domain name to redirect Internet users to its own website selling products that competed with the complainant’s products under the OREGON STATE BAR mark was not a bona fide offering of goods or services, stating, “Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.” In addition, the panel in Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum Jul. 29, 2005) held that a respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark. In line with these previous cases, it is apparent to the Panel that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has registered and is using the <cyclopediabritannica.com> domain
name in bad faith under Policy ¶ 4(b)(iii), for Respondent is diverting
Internet users seeking Complainant to its own website displaying links to
competing encyclopedia services operated by Respondent. In Classic Metal Roofs, LLC v. Interlock
Industries, Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006), the panel found
that the respondent registered and used the <classicmetalroofing.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet
users to the respondent’s competing website.
Therefore, Respondent’s registration and use of the disputed domain name
constitutes bad faith under Policy ¶ 4(b)(iii), as
Respondent is disrupting Complainant’s business. See Marriott Int’l, Inc.
v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May
6, 2005) (“The Respondent is a travel agency and thus operates in the same
business as the Complainant. The
parties can therefore be considered as competitors. The Panel thus finds that
the Respondent registered the domain name primarily for the purpose of
disrupting the business of a competitor, which constitutes evidence of
registration and use in bad faith under Policy 4(b)(iii).”).
Respondent is also taking advantage of the confusing similarity
between the <cyclopediabritannica.com>
domain name and Complainant’s BRITANNICA mark, and likely profiting from the
goodwill associated with the mark by diverting Internet users to its competing
websites. The Panel finds such
registration and use to be in bad faith pursuant to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23,
2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the
respondent was using the <dellcomputerssuck.com> domain name to divert
Internet users to respondent’s website offering competing computer products and
services); see also Velv,
LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the
respondent’s use of the <arizonashuttle.net> domain name, which contained
the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to
Respondent’s website offering competing travel services violated Policy ¶
4(b)(iv)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cyclopediabritannica.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 16, 2007
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